IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration
`
`Registration No. 2796876
`For the Mark CARSON
`______________________________________________X
`
`CARSON INDUTRIES, INC.,
`
`Petitioner,
`
`-against-
`CAMERON INTERNATIONAL
`
`TRADING, INC.,
`
`2
`Registrant.
`____________________________________________ __X
`
`Cancellation No. 92052076
`‘75/4->181, 5”4»
`
`MOTION TO SUSPEND CANCELLATION ACTION UNDER 37 C.F.R. § 2.117(a)
`
`Pursuant to §2.117(a) and TBMP §510.02(a), Registrant, Carson Optical, Inc.,
`
`formerly known as Cameron International Trading, Inc. (“Registrant”) by and through its
`
`undersigned attorneys, respectfully requests that the instant proceedings be suspended
`
`pending the final determination of a civil action between the parties in United States
`
`District Court for the Eastern District of New York, Civil Action No. 10-cv—0867 (JS)
`
`(MJB).
`
`H|||||Illll|||||Illlllllllilllll||l|l|l|l|||lH|||
`
`03-o3—2n1u
`|’-‘etarw Eu T"‘5CW':/TM Mail Flcpl. D1.
`
`E
`
`:32
`
`———
`
`

`
`BRIEF STATEMENT OF FACTS
`
`Registrant is the owner of an incontestable federal trademark registration for its
`
`CARSON trademark, covering, among other items, night vision devices. Upon becoming
`
`aware of the fact that Carson Industries, Inc.
`
`(“Petitioner”) was selling night vision
`
`products under the name “Carson Industries,” Registrant contacted Petitioner, informing
`
`Petitioner of Registrant’s prior rights in the CARSON trademark and asking Petitioner to
`
`immediately cease all use of CARSON or CARSON INDUSTRIES in Petitioner’s sale of
`
`night vision products.
`
`On February 15, 2010, Petitioner filed the instant cancellation action to cancel
`
`Registrant’s registration of CARSON in International Class 9 (“Cancellation Action”),
`
`based on Petitioner’s unsubstantiated claims that (1) Registrant has committed fraud upon
`
`the United States Patent and Trademark Office and (2) Registrant has abandoned its rights
`
`to the CARSON trademark with respect to night vision products.
`
`THE DISTRICT COURT ACTION
`
`On March 1, 2010, Registrant filed a Complaint in the United States District Court
`
`for the Eastern District of New York, a copy of which is attached as Exhibit A and
`
`incorporated herein by reference, alleging that Petitioner has infringed and continues to
`
`infringe Registrant’s rights in and to the Mark with its unauthorized use of the confusingly
`
`similar mark CARSON INDUSTRIES under the Lanham Act and New York state law.
`
`The newly filed civil action has a direct bearing on all of the issues involved in the
`
`instant proceeding because a decision by the Eastern District of New York will be wholly
`
`dispositive of the pending Cancellation Action. Specifically, the District Court action will
`
`1002096
`
`2
`
`

`
`resolve whether or not Registrant is the owner of a valid registration for the CARSON
`
`trademark. Moreover, because the civil action contemplates additional legal disputes that
`
`are not currently before the Trademark Trial and Appeal Board (the “Board”) and for
`
`which the Board cannot assert jurisdiction, Registrant respectfully asserts that suspension is
`
`warranted.
`
`SUSPENSION OF THE INSTANT PROCEEDING IS APPROPRIATE
`
`The Board has
`
`the discretion to suspend a proceeding pending the final
`
`determination of a civil action. Pursuant to 37 C.F.R. § 2.1l7(a), if parties to a “pending
`
`case are engaged in a civil action which may be dispositive of the case, proceedings before
`
`the Board may be suspended until termination of the civil action.” See also TBMP §
`
`510.02(a) (“[T]he Board will suspend proceedings in the case before it if the final
`
`determination of the other proceeding will have a bearing on issues before the Board”).
`
`See also Tokaido v. Honda Associates, Inc., 179 U.S.P.Q. 861, 862 (TTAB 1973).
`
`There is ample precedent for the Board to suspend an action pending before it when
`
`a party subsequent to the Board proceeding files a civil action.
`
`In Jeffrey Banks, Ltd. v.
`
`Jos. A. Bank Clothiers, Inc., 226 U.S.PQ. 942 (D.C. Md 1985), Plaintiff Jeffrey Banks
`
`sought a declaratory judgment that its mark JEFFREY BANKS for clothing, did not cause
`
`a likely of confusion as to Defendant Jos. A. Bank’s registered mark JOS. A. BANK. Prior
`
`to this federal lawsuit, Jos. A. Bank had filed a Notice of Opposition to the proposed
`
`registration of Jeffrey Bank’s mark, arguing that Jeffrey Bank’s use of the mark was likely
`
`to cause confusion with respect to the origin and source of the goods. I; The Board
`
`granted Jeffrey Bank’s motion to stay the proceedings before the Board pending the
`
`resolution of the civil action.
`
`I_d_. at 944.
`
`1002096
`
`3
`
`

`
`The Tokaido case addressed similar issues.
`
`In Tokaido, the respondent filed a
`
`motion to suspend the cancellation action after respondent instituted an action against
`
`petitioner. The Board considered the fact that the civil action would be dispositive of the
`
`issues present in the cancellation action and noted that:
`
`it is clear that the outcome of the civil suit may well be dispositive of the
`issues raised by the pleadings of the parties in the cancellation proceeding
`before the Board. It should be noted in this regard that while a decision by the
`[U.S.] District Court would be binding upon the [Trademark] Office, a
`decision by the Trademark Trial and Appeal Board would only be advisory in
`respect to the disposition of the case pending in the [U.S.] District Court.
`
`Tokaido, 179 U.S.P.Q. at 862.
`
`In granting Registrant’s Motion to stay the cancellation
`
`action pending resolution of the civil suit, the Board in Tokaido held that:
`
`[a]ccordingly, and notwithstanding the fact that the [Trademark] Office
`proceeding was the first to be filed, it is deemed to be the better policy to
`suspend proceedings herein until the civil suit has been finally concluded.
`
`Tokaido, 179 U.S.P.Q. at 862 (emphasis added).
`
`See also Townley Clothes, Inc. v.
`
`Goldring, Inc., 100 U.S.P.Q. 57, 58 (Comr., 1953) (holding that “it is deemed to be the
`
`sounder practice to suspend the [Trademark] Office proceedings pending termination of the
`
`[civil] [c]ourt action”); Sguirrel Brand Company v. Barnard Nut Co. Inc., 101 U.S.P.Q. 340
`
`(Comr., 1954) (holding that proceedings were properly suspended where “the controlling
`
`issues presented for determination are necessarily the same as those of a civil action for
`
`infringement involving the same parties and trade marks”).
`
`S_e_<e_alsQ Farah v. Topiclear
`
`Beauty Prods., Inc., 2003 WL 22022077 (T.T.A.B. August 31, 2003) (“Suspension would
`
`avoid the undesirable result of the parties litigating the same issue in two forums, with
`
`potentially inconsistent results and would minimize waste of both parties’ and the Board’s
`
`resources”).
`
`1002096
`
`4
`
`

`
`In the instant proceeding Registrant has filed a civil action against Petitioner
`
`wherein the central
`
`issues involved are exactly the same as the ones at
`
`issue in the
`
`Cancellation Action. However, the District Court action -- not the Cancellation Action --
`
`will provide both parties with a complete judicial resolution of all of their the legal and
`
`equitable claims. Thus, in the interest of judicial economy (and by reasons of the res
`
`judicata and collateral estoppel effects that a district court judgment would have on the
`
`pending Cancellation Action) the Cancellation Action should be stayed.
`
`S_ee_: TBMP §
`
`5l0.02(a), c_iti_ng, Goya Foods Inc. v. Tropicana Prods. Inc., 846 F.2d 848 (2d Cir. 1988)
`
`(“To the extent that a civil action in a Federal district court involves issues in common with
`
`those in a proceeding before the Board, the decision of the Federal district court is binding
`
`upon the Board, while the decision of the Board is not binding upon the court”); _Sge_al:Q 5
`
`J. Thomas McCarthy, McCarthy On Trademarks and Unfair Competition, § 32:49 at 32-
`
`l02.1(4th ed. 2004) (“A judgment of a federal court is clearly binding upon the Trademark
`
`Board, while an administrative decision of the Trademark Board may have only persuasive
`
`value in later court proceedings”).
`
`Based upon the foregoing, Registrant respectfully requests that the Board exercise
`
`its discretion to grant the instant motion to suspend the Cancellation Action pending the
`
`final determination of the civil action between the parties.
`
`Date: March 3, 2010
`
`Respe t
`
` R0
`
`rt J. deB were, Esq.
`Pryor Cashman LLP
`7 Times Square
`New York, NY 10036-6569
`(212) 421-4100
`Attorney for Registrant
`
`1002096
`
`5
`
`

`
`EXHIBIT A
`
`Complaint
`
`1002096
`
`5
`
`

`
`A0 440 (Rev. 12/09) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
`
`EASTERN DISTRICT OF NEW YOI
`
`CARSON OPTICAL, INC.
`
`Plaintifl
`V
`CARSON INDUSTRIES, INC
`
`Defendant
`
`\J\/\J\/\y\/g/
`
`_
`_
`CivilzIActtion No.
`
`""
`
`tl
`
`SUMMONS IN A CIVIL ACTION
`
`SPATT. J.
`
`T0: (Defendant's name and address) CARSON INDUSTRIES, INC_
`54 SAW TIMBER ROAD
`
`HILTON HEAD, SOUTH CAROLINA 29926
`
`E M J
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) —— or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff‘ s attorney,
`whose name and address are:
`PRYQR CASHMAN LLP
`7 TIMES SQUARE
`NEW YORK, NEW YORK 10036
`ATTN: ROBERT J. DEBRAUWERE, ESQ.
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also must file your answer or motion with the court.
`
`
`
`
`
`MAR 91 ?filtII
`
`Date:
`
`CLZBIQ-'r
`
`
`
`
`
`
`or Deputy Clerk
`W
`
`
`
`

`
`avrAan-.»r—_,
`
`Er
`55
`
`A0 440 (Rev. 12/09) Summons in a Civil Action (Page 2)
`
`Civil Action No.
`
`(This section should not befiled with the court unless required by Fed. R. Civ. P. 4 (1))
`
`PROOF OF SERVICE
`
`This summons for (name ofindividual and title, ifany)
`
`was received by me on (date)
`
`D I personally served the summons on the individual at (place)
`
`on (date)
`
`; or
`
`D I left the summons at the individual’s residence or usual place of abode with (name)
`
`on (date)
`
`, and mailed a copy to the individual’s last known address; or
`
`, a person of suitable age and discretion who resides there,
`
`D I served the summons on (name of individual)
`
`designated by law to accept service of process on behalf of (name oforganization)
` on (date)
`
`; or
`
`D I returned the summons unexecuted because
`
`D Other (specifiz):
`
`, who is
`
`; or
`
`My fees are $9
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`Server’: signature
`
`
`Printed name and title
`
`_a_
`Server ’s address
`
`Additional information regarding attempted service, etc:
`
`
`
`

`
`\IS 44 (Rev. 12/07)
`
`CIVIL COVER SHEET
`
`The IS 44 civil cover sheetand the infonnation contained herein neither re lace nor supplement the filing and service ofpleadin s or other apers as re uired by law, except as provided
`by local mles ofcourt This fonn, approved by the Judicial Conference 0 the United tates in September 1974, is required fort e use oftiie Clerk of ourt for the purpose of initiating
`the Civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`1. (a) PLAINTIFFS
`I
`
`
`
`CARSON OPTICAL, INC.
`
`(b) County of Residence of First Listed Plaintiff SUFFOLK
`(EXCEPT IN US. PLAINTIFF CASES)
`
`(C) Attorney’S (Firm Name, Address, and Telephone Number)
`
`= 3.
`I
`
`PRYOR CASHMAN LLP, 7TIMES SQUARE, NEWYORK,
`
`10036, ROBERT J. DEBRAUWERE, ESQ.
`
`NTS
`
`3 '
`
`‘
`
`INBUSTRIES, I
`
`County of Residence of First Listed Defendant
`(IN US. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, use THE LOCATION or THE
`LAND INVOLVED.
`
`ENOTE:
`I
`‘N CLER ,3 OFFICE
`»
`‘CT
`
`Q I
`
`+
`
`if
`
`-
`
`. _, J:
`
`'
`
`A
`
`‘
`
`II. BASIS OF JURISDICTION (Place an “x'’ in One Box Only)
`D l U.S. Government
`U 3 Federal Question
`Plaintiff
`(U.S. Government Nota Party)
`
`. ,.~ ,4
`"V3i:__,l
`
`III. CITIZENSHIP OF PRINCIPAL PAR I S(Place ani“X" iri‘One Box for Plaintiff
`nly)
`and One Box for Defendant)
`-’
`PTF
`DEF
`PTF
`DEF
`U l
`Incorporated or Principal Place
`CI
`4
`D 4
`D l
`of Business In This State
`
`Citizenof This State
`
`U 2 U.S. Government
`Defendant
`
`CI 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`Cl 2
`
`D 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`Citizen orsubjectofa
`Forein Count
`
`CI 3
`
`Cl
`
`3
`
`Foreign Nation
`
`CI
`
`CI
`
`5
`
`6
`
`CI
`
`CI
`
`5
`
`6
`
`
`
`CI
`
`CI
`
`
`
`Cl
`
`
`
`
`
`
`
`CI
`
`
`
`
`
`
`
`
`CI 510 Motions to Vacate
`441 Voting
`CI
`
`Sentence
`442 Employment
`Cl
`I-Inbeas Corpus:
`D 443 Housing/
`D 530 General
`Accommodations
`'twL.lMMIGRA€['I0N ‘
`0 535 Death Penalty
`0 444 Welfare
`0 445 Amer. w/Disabilities - D 540 Mandamus & Other 0 462 Naturalization Application
`CI 550 Civil Rights
`0 463 Habeas Corpus -
`Employment
`
`555 Prison Condition
`Alien Detainee
`446 Amer. w/Disabilities -
`
`D 465 Other Immigration
`Other
`D 440 Other Civil Rights
`Actions
`
`
`IV
`Place an “X” '
`
`CI 110 Insurance
`PERSONAL IN URY
`PERSONAL INJURY
`D 610 Agriculture
`D 422 Appeal 28 USC 158
`D 400 State Reapportionment
`
`
`D 120 Marine
`CI
`310 Airplane
`Cl
`362 Personal Injury -
`Cl 620 Other Food & Drug
`D 423 Withdrawal
`D 410 Antitrust
`D 625 Drug Related Seizure
`28 USC 157
`0 315 Airplane Product
`Med. Malpractice
`D 130 Miller Act
`CI 430 Banks and Banking
`
`ofProperty 2| USC 881
`CI 140 Negotiable Instrument
`Liability
`365 Personal Injury —
`D 450 Commerce
`
`D 630 Liquor Laws
`"PR PERTY"RI HT "i"?-4* D 460 Deportation
`0 150 Recovery of Overpayment D 320 Assault, Libel &
`Product Liability
`
`[3 640 RR & Truck
`D 820 Copyrigh
`& Enforcement ofJudgment
`Slander
`D 368 Asbestos Personal
`Cl 470 Racketeer Influenced and
`Cl 650 Airline Regs.
`D 830 Patent
`Cl 151 Medicare Act
`330 Federal Employers’
`Injury Product
`Corrupt Organizations
`Cl 152 Recovery of Defaulted
`Liability
`Liability
`0 660 Occupational
`E 340 Trademark
`Cl 480 Consumer Credit
`Student Loans
`340 Marine
`PERSONAL PROPERTY
`Safety/Health
`D 490 Cable/Sat TV
`Cl
`
`(Excl. Veterans)
`D 345 Marine Product
`El 370 Other Fraud
`0 690 Other
`CI 810 Selective Service
`
`'
`’
`=*A’B I R‘-‘I-°
`9
`=
`CI 153 Recovery of Overpayment
`Liability
`0 371 Truth in Lending
`El 850 Securities/Commodities/
`
`D 710 Fair Labor Standards
`D 861 HIA (1395ff)
`of Veteran‘s Benefits
`D 350 Motor Vehicle
`D 380 Other Personal
`Exchange
`
`El 862 Black Lung (923)
`Act
`0 160 Stockholders‘ Suits
`Cl
`355 Motor Vehicle
`Property Damage
`875 Customer Challenge
`0 720 Labor/Mgmt. Relations
`CI 190 Other Contract
`Product Liability
`385 Property Damage
`0 863 DIWC/DIWW (405(g))
`12 USC 3410
`
`D 730 Labor/Mgmt.Reporting
`D 195 Contract Product Liability CI
`360 Other Personal
`Product Liability
`D 864 SSID Title XVI
`D 890 Other Statutory Actions
`D 196 Franchise
`ln'u
`& Disclosure Act
`Cl 865 RS1 (405())
`D 891 Agricultural Acts
`RE2\‘I’i’PROPERTY
`Cl 740 Railway Labor Act
`'I?AX‘SU'ITS i=»=:-
`. CI 892 Economic Stabilization Act
`CI 210 Land Condemnation
`D 790 Other Labor Litigation
`0 870 Taxes (U.S. Plaintiff
`D 893 Environmental Matters
`
`CI 220 Foreclosure
`or Defendant)
`CI 791 Empl. Ret. Inc.
`D 894 Energy Allocation Act
`I3 230 Rent Lease & Ejectment
`El 871 lRS——-Third Party
`Security Act
`Cl 895 Freedom of Information
`
`
`
`26 USC 7609
`13 240 Torts to Land
`Act
`13 245 Tort Product Liability
`D 900/Appeal of Fee Determination
`CI 290 All Other Real Property
`Under Equal Access
`to Justice
`CI 950 Constitutionality of
`State Statutes
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CI
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`f
`T
`(Place an “X” in One Box Only)
`V. ORIGIN
`d f
`r
`_
`a‘:(a)'t‘l§‘e‘:'E:’Stri::(:m D 6 Multidistrlcl
`CI 7
`8 1 Original.
`13 2 Removed from
`D 3 Remanded from
`D 4 Reinstated or Cl
`
`5 cc”.
`Litigation
`Proceeding
`State Court
`Appellate Court
`Reopened
`
`
`Cjltgtlej %SCCi§il1S&t_)u,fe uerydgrewqhich you are filing (Do not cite jurisdictional statutes unless diversity):
`
`VI. CAUSE OF ACTION Brief descri
`tion of cause:
`TRADE ARK INFRINGEMENT
`
`C! CHECK IF THIS is A CLASS ACTION
`DEMAND S
`UNDER F.R.C.P. 23
`1,000,000.00
`
`VII. REQUESTED IN
`C01\/[PLA]NT:
`
`CHECK YES only if demanded in complaint:
`JURY DEMAND:
`D Yes
`21 No
`
`5
`
`Ap eal to District
`J
`6 from
`filagistrate
`Jud mam
`
`
`
`
`
`
`
`
`VIII. RELATED CASE(S)
`IF ANY
`
`_
`.
`_
`(See instructions).
`
`JUDGE DOCKET NUMBER
`
`DATE
`SIGNATU O
`
`
`02/25/2010
`FOR OFFICE USE ONLY
`
`
`
`RECEIPT all
`
`
`ALT
`AMOUNT
`APPLYING IFP
`JUDGE
`MAG. JUDGE
`
`

`
`ARB ITRATION C E RTIFIC ATION
`
`I, Ehifll’ J’ (QC ‘Qfi-'(g'v",Q counsel for C4/‘Mg 2£'l"ui‘p , /lC-.
`
`do hereby certify pursuant to the Local
`
`Arbitration Rule 83. I 0 that to the best of my knowledge and belief the damages recoverable in the above captioned civil action exceed the
`sum of $150,000 exclusive of interest and costs.
`f§}—«4iQM 2
`Relief other than monetary damages is sought.
`DISCLOSURE STATEMENT - FEDERAL RULES CIVIL PROCEDURE 7.]
`
`Identify any parent corporation and any publicly held corporation that owns 10% or more or its stocks:
`
`RELATED CASE STATEMENT (SECTION VIII)
`
`All cases that are arguably related pursuant to Division of Business Rule 50.3.1 should be listed in Section VIII on the front of this
`form. Rule 50.3.1 (a) provides that “A civil case is “related” to another civil case for purposes of this guideline when, because of
`the similarity offacts and legal issues or because the cases arise from the same transactions or events, a substantial saving ofjudicial
`resources is likely to result from assigning both cases to the same judge and magistrate judge.”
`
`NY-E DIVISION OF BUSINESS RULE 50.1(d)(2)
`
`Is the civil actiqn being filed in the Eastern District removed from a New York State Court
`1.)
`County:
`{V O
`
`located in Nassau or Suffolk
`
`2.) If you answered “no” above:
`
`a) Did the events or omissions giving rise to the claim or claims, or a substantial part thereof, occur in Nassau or Suffolk
`County?
`1%? 3
`b) Did the events of omissions giving rise to the claim or claims, or a substantial part
`District?
`511? 5
`Ifyour answer to question 2 (b) is “No,” does the defendant (or a majority ofthe defendants, ifthere is more than one) reside in Nassau or
`Suffolk County, or, in an interpleader action, does the claimant (or a majority ofthe claimants, ifthere is more than one) reside in Nassau
`or Suffolk County?
`
`in the Eastern
`
`thereof, occur
`
`(Note: A corporation shall be considered a resident ofthe County in which it has the most significant contacts).
`
`BAR ADMISSION
`
`I am currently admitted in the Eastern District of New York and currently a member in good standing of the bar of this court.
`Yes
`\/
`No
`
`Are you currently the subject ofany disciplinary action (s) in th y other state or federal court?
`
`Yes
`
`(Ifyes, please explain)
`
`No
`
`
`
`Please provide your E-MAIL address and bar code below. Your bar code consists of the initials of your first and last name and the last four
`digits ofyour social security number or any other four digit number registered by the attorney with the Clerk ofCourt. (This information must
`be provided pursuant to local rule ll.l(b) ofthe civil rules).
`Attorney Bar Code:
`C?
`0
`
`E-MAIL Address:
`
`E»/$0‘/C“‘5L~ """’7\‘ (3 '1‘
`
`Electronic filing procedures were adopted by the Court in Administrative Order No. 97~l2, “In re: Electronic Filing Procedures (ECI-‘).”
`Electronic filing became mandatory in Administrative Order 2004-08, “In re: Electronic Case Filing.” Electronic service ofall papers is now
`routine.
`
` I certify the accuracy
`
`Signature:
`
`

`
`PRYOR CASHMAN LLP
`
`Attorneys for Plaintiff
`7 Times Square
`New York, New York 10036-6569
`(212) 421-4100
`
`_
`I2“
`IN CLERK'S OFFIC:
`.2 ’?'STP.cT COURT E.D.N.‘-.’
`
`,W
`a,
`fig‘ MAR 0 1 2010 X
`
`RROOKLYN OFFICE
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF NEW YORK
`_________________________________________________________________x
`
`CARSON OPTICAL, INC.
`
`._ J
`
`,
`
`:
`
`.
`
`COMPLAINT
`
`,
`
`-against-
`
`CARSON INDUSTRIES, INC.
`
`Defendant.
`_______________________________________________________________ __X
`
`g(‘)‘\{\E. la’-‘i*
`
`Plaintiff Carson Optical, Inc. (“Carson Optical”), by its attorneys Pryor Cashman LLP, alleges as
`
`follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement, false designation of origin, unfair
`
`competition, and false and deceptive business practices, in violation ofthe laws ofthe United States and
`
`the State of New York. Carson Optical seeks an injunction, damages and related relief.
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`JURISDICTION AND VENUE
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`2.
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`The Court hasjurisdiction over this matter pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§
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`1331, 1338 and 1367. Carson Optical’s claims are predicated upon the Lanham Act of 1946, as
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`amended, 15 U.S.C. § 1051, et seq. , and the statutory and common law ofthe State ofNew York. Venue
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`is properly founded in this district pursuant to 28 U.S.C. § 1391(b) and (c).
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`THE PARTIES
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`3.
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`Carson Optical is a New York corporation with its principal place ofbusiness at 35 Gilpin
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`Avenue, Hauppauge, New York 11788. Carson Optical is engaged in, among other business activities,
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`importing, selling and distributing optical devices, including night vision products. . Carson Optical may
`hereinafter be referred to as “Plaintiff.”
`I
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`4.
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`Upon information and belief, Carson Industries, Inc. (“Carson Industries”) is a South
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`Carolina corporation with its principal place of business at 54 Saw Timber Road, Hilton Head, South
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`Carolina 29926. Upon information and belief, Carson Industries is engaged in, among other business
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`activities, importing, selling and distributing optical devices, including night vision products. Carson
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`Industries shall hereinafter be referred to as “Defendant.”
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`5.
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`Upon information and belief, Defendant is subject to personal jurisdiction within this
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`district because, by selling and distributing its products under the CARSON name and mark both within
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`and outside this district, they have: (a) committed and threatened to commit trademark infringement,
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`unfair competition and other tortious acts in this district; (b) caused injury to Plaintiff and Plaintiff's
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`property in this district; (c) purposely and directly targeted its activities at this district; and (d) derived
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`substantial revenues from interstate commerce.
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`CARSON OPTICAL’S TRADEMARK
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`6.
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`For nearly 15 years, Carson Optical has actively imported, sold and distributed a wide
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`variety of optical products, including night vision devices, in the United States and throughout the world.
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`7.
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`As a result of Carson Optical’s extensive distribution and sale of optical products in the
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`United States and throughout the world, Carson Optical has become well known to the consuming public
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`and trade as the source or origin of high quality optical products, including night vision devises.
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`8.
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`Carson Optical is the owner of an incontestable federal trademark registration for its
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`CARSON trademark (No. 2,796,876), covering, among other items, night vision devices, a copy of the
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`registration certificate for the CARSON trademark is attached hereto as Exhibit 1.
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`DEFENDANTS’ WRONGFUL ACTS
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`9. I
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`Carson Industries, without the consent of Carson Optical, has caused to be manufactured,
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`distributed, offered for sale, and/or sold in interstate commerce night vision products using the name and
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`mark CARSON and/or CARSON INDUSTRIES.
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`10.
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`Carson Industries has caused to be manufactured, distributed, offered for sale, and/or sold
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`in interstate commerce certain night vision products under the name Carson or Carson Industries.
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`1 l .
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`The aforementioned acts of Carson Industries violate Plaintiffs trademark rights, and are
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`likely to cause confusion and mistakenly and deceptively foster the impression among consumers that (a)
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`Carson Industries’ night vision products originate with the Plaintiff, (b) there is some affiliation,
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`connection or association of Carson Industries with the Plaintiff, and/or (c) said night vision products are
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`being offered to consumers with the sponsorship and/or approval of the Plaintiff.
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`12.
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`Upon information and belief, the aforementioned acts of Carson Industries were willful
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`and intentional, in that Carson Industries intentionally copied Plaintiff’ s trademark, or willfully ignored
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`such fact, and were undertaken in a deliberate effort to cause confusion and mistake among the
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`consuming public as to the source, affiliation and/orsponsorship ofsaid products, and to gain for Carson
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`Industries the benefit of the enormous goodwill associated with the plaintiff s distinctive trademark.
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`FIRST CLAIM FOR RELIEF ON BEHALF OF CARSON OPTICAL
`(FALSE DESIGNATION OF ORIGIN AND TRADEMARK INFRINGEMENT
`(15 U.S.C. § 1125121))
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`13.
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`Carson Optical repeats and realleges the allegations set forth in paragraphs 1 through 12
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`above as if fully set forth herein.
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`14.
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`The aforementionedvacts of Carson Industries constitute the intentional use of a false
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`designation of origin, the making of false or misleading representations of fact, and the infringement of
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`the CARSON trademark, in violation of 15 U.S.C. § ll25(a).
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`15.
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`Said acts of Carson Industries have caused and will continue to cause irreparable injury to
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`Carson Optical, for which Carson Optical has no adequate remedy at law.
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`16.
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`This is an exceptional case, entitling the Plaintiff to the recovery ofreasonable attorneys’
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`fees and costs in pursuing this matter to judgment.
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`SECOND CLAIM FOR RELIEF ON BEHALF OF CARSON OPTICAL
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`QCOMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION)
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`17.
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`Carson Optical repeats and realleges the allegations set forth in paragraphs 1 through 12
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`above as if fully set forth herein.
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`18.
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`The aforementioned acts of Carson Industries constitute trademark infringement and
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`unfair competition in violation of the common law of the state of New York.
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`19.
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`Said acts of Carson Industries have caused and will continue to cause irreparable injury
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`to Carson Optical, for which Carson Optical has no adequate remedy at law.
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`THIRD CLAIM FOR RELIEF ON BEHALF OF CARSON OPTICAL
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`§N.Y. GENERAL BUSINESS LAW § 3491
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`20.
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`Carson Optical repeats and realleges the allegations set forth in paragraphs 1 through 12
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`above as if fully set forth herein.
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`.
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`21.
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`The aforementioned acts of Carson Industries constitute deceptive acts and practices in
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`violation of New York General Business Law § 349.
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`22.
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`Said acts of Carson Industries have caused and will continue to cause irreparable injury
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`to Carson Optical, for which Carson Optical has no adequate remedy at law.
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`WHEREFORE, Carson Optical demands that ajudgment be entered granting the following relief:
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`1;
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`Preliminarily and permanently enjoining and restraining defendant, its subsidiaries,
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`affiliates, divisions, officers, directors, principals, servants, employees, successors and assigns, and all
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`those in active concert or participation with them from:
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`a.
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`imitating, copying, making unauthorized use of, or making any colorable copy or
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`imitation of Carson Optical’s trademarks;
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`b. manufacturing, importing, exporting, distributing, circulating, selling, offering for
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`sale, advertising, promoting or displaying any product using any unauthorized reproduction, copy,
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`counterfeit or colorable imitation of any of Carson Optical’s trademarks;
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`c. using any unauthorized reproduction, copy, counterfeit or colorable imitation of
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`plaintiffs’ trademarks, in connection with the manufacture, promotion, advertisement, display, sale,
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`offering for sale, production, import, export, circulation or distribution of any product in such manner as
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`to relate or connect, or tend to relate or connect, such product in any way with Carson Optical or to any
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`goods sold, sponsored, approved by, or connected with Carson Optical;
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`d.
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`engaging in any other activity constituting unfair competition with Carson Optical,
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`or constituting an infringement of Carson Optical’s trademarks, or of Carson Optical’s rights in, or its
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`rights to use or exploit such trademarks;
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`e. making any statement or representation whatsoever, with respect to the infringing
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`goods in issue, that falsely designates the origin of the goods as those of Carson Optical, or that is false
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`or misleading with respect to Carson Optical; and
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`f.
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`engaging in any other activity, including the effectuation of assignments or
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`transfers of its interests in reproductions, copies, counterfeit or colorable imitations of Carson Optical’s
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`trademarks, including, but not limited to, the formation of other corporations, partnerships, associations
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`or other entities or the utilization of any other devices, for the purpose of circumventing, evading,
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`avoiding or otherwise violating the prohibitions set forth in subsections 1(a) through l(e) above.
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`2.
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`Directing that Defendant deliver for destruction all catalogs, advertisements, products,
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`labels, tags, artwork, prints, signs, packages, dies, wrappers and receptacles in its possession, custody or
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`control bearing infringements of Carson Optical’s trademarks, and/or any reproductions, copies,
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`counterfeit or colorable imitations thereof, including all plates, molds, matrices and other means of
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`making such imitations of such trademarks.
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`3.
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`Directing such other relief as the Court may deem appropriate to prevent the trade and
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`public from deriving any erroneous impression that any product at issue in this case that has been offered
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`for sale, sold or otherwise circulated or promoted by Defendant is authorized by Carson Optical or is
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`related to or associated in any way with Carson Optical’s products.
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`4.
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`Requiring Defendant to account and pay over to Carson Optical all profits realized by
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`its wrongful acts and directing that such profits be trebled, since Defendant’s acts were willful.
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`5.
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`Awarding Carson Optical damages representing three times the amount of the actual
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`damages incurred by reason of Defendant’s wrongful acts.
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`6.
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`Awarding Carson Optical its costs and reasonable attorneys’ and investigatory fees
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`and expenses, together with prej udgment interest.
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`7.
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`Awarding Carson Optical punitive damages for defendant’s malicious and willful
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`infringing actions, in a sum to be determined upon the trial of this matter, but not less than the sum of
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`$1,000,000.
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`8.
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`Awarding Carson Optical such other and further relief as the Court deems just and
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`proper.
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`Dated: New York, New York
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`February 25, 2010
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`7 Times Square
`New York, New York 10036-6569
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`(212) 421-4100
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing MOTION TO
`SUSPEND CANCELLATION ACTION UNDER 37 CFR § 2.117(a) has been served upon
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`Petitioner’s attorneys,
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`Douglas W. Kim
`McNair Law Firm, P.A.
`Post Office Box 447
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`Greenville, SC 29602
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`the address designated by said attorney for the purpose of depositing a true copy thereof
`with the United States Post Service as first-class ma" on Mar
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`I
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`Certificate of Mailing by First Class Mail
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`I hereby certify that this MOTION TO SUSPEND CANCELLATION ACTION UNDER
`37 C.F.R. § 2.117(a) is being deposited with the United States Postal Service as "First Class
`Mail" in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451,
`Alexandria, VA 22313-1451, ATTN: Trademark Trial and Appeal Board on March 3,
`2010.
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`Signed:
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`g {M 4
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`Name:
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`/€03/V 5f/5/(“flu
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`1002096
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`7